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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gerolsteiner Brunnen GmbH & Co., KG v. R4L Privacy Advocate / Gero Leon Steiner
Case No. D2008-1450
1. The Parties
The Complainant is Gerolsteiner Brunnen GmbH & Co., KG, Gerolstein, Germany, represented by CMS Hasche Sigle, Germany.
The Respondent is R4L Privacy Advocate / Gero Leon Steiner, respectively of Laredo, Texas, United States of America; and Albuquerque, New Mexico, United States of America.
2. The Domain Name and Registrar
The disputed domain name <gerolsteiner.info> is registered with Tucows, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the вАЬCenterвАЭ) on September 23, 2008. On September 24, 2008, the Center transmitted by email to Tucows, Inc. a request for registrar verification in connection with the disputed domain name. On September 25, 2008, Tucows, Inc. transmitted by email to the Center its verification response confirming that вАЬR4L Privacy AdvocateвАЭ is listed as the registrant and providing the contact details. In a pre-commencement e-mail communication of September 15, 2008, Gero Leon Steiner asserted that he was the registrant-in-fact of the disputed domain name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the вАЬPolicyвАЭ), the Rules for Uniform Domain Name Dispute Resolution Policy (the вАЬRulesвАЭ), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the вАЬSupplemental RulesвАЭ).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified both вАЬR4L Privacy AdvocateвАЭ and Gero Leon Steiner (collectively the вАЬRespondentвАЭ) the Respondent of the Complaint, and the proceedings commenced on September 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2008. The Response was filed with the Center on October 16, 2008.
On October 21, 2008, the Complainant submitted a supplemental filing to the Center. The Respondent also submitted a supplemental filing to the Center on October 23, 2008.
The Center appointed James A. Barker as the sole panelist in this matter on October 22, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a leading company in the German mineral water industry. The Complainant also operates its main website at вАЬwww.gerolsteiner.comвАЭ. The Complainant is the owner of a number of registered marks for GEROLSTEINER, including a mark registered on September 18, 2001, in the United States of America, where the Respondent is based. The Complainant is also the owner of marks registered in Germany and the European Community, as well as the owner of international marks. The Complainant provided evidence of those marks in the Complaint.
The RegistrarвАЩs indicated that the disputed domain name was created on August 2003. However the date on which the disputed domain name was registered by the Respondent, is not clear and is not identified by the Respondent itself. In the absence of such an identification, finding the date of registration by the Respondent is difficult, and is unaided by the RespondentвАЩs use of a privacy shield. That use masked the identity of the Respondent (subsequently identified through an e-mail communication by Respondent.
The Complainant provides evidence that the WhoIs details on May 18, 2007, indicated that the then registrant was a Mr. Mueller, who was also listed as the administrative, technical and billing contact for the domain name. Mr. MuellerвАЩs contact details provided an address in Germany. Those WhoIs details also indicated that the status of the disputed domain name was then listed as вАЬClient Transfer ProhibitedвАЭ and вАЬClient Update ProhibitedвАЭ.
Nevertheless, for reasons not explained and on a date not identified in the case file, the registration details for the disputed domain name were subsequently changed. The Complainant provided evidence that on September 11, 2008, the registrant of the disputed domain name was listed under the name of the privacy service, вАЬR4L Privacy AdvocateвАЭ.
In two previous e-mail communications from Respondent, dated September 15, 2008 and September 29, 2008, as well as in its Response, the Respondent вАЬGero Leon SteinerвАЭ claims to be the registrant-in-fact of the disputed domain name. Accordingly, both Gero Leon Steiner as well as R4L Privacy Advocate are listed as the Respondent in this case. The Panel notes that no communication was made by R4L Privacy Advocate in connection with this case. Although the Respondent identified R4L Privacy Advocate as its вАЬauthorized representativeвАЭ for the purpose of these proceedings, it was evident that the Response was, in fact, prepared and signed in the name of вАЬGero Leon SteinerвАЭ. There is no apparent factual basis for treating R4L Privacy Service as the RespondentвАЩs representative. Therefore that entity is not identified as such a representative in the first paragraph of this decision.
At the date of this decision, the disputed domain name reverts to a site with simple content. That site prominently displays вАЬGero Leon SteinerвАЭ in the center of its homepage. At the top of that page, is the statement вАШThis is a private, non-commercial site. It is not sponsored by, affiliated with or related to вАЬGerolsteiner Brunnen GmbH & Co. KG in any wayвАЭ and then refers to the ComplainantвАЩs main website.
5. PartiesвАЩ Contentions
The Complainant provides evidence that the previous registrant of the disputed domain name, Mr. Mueller, was sued by the Complainant before the Regional Court of Coblenz, Germany, for violation of the ComplainantвАЩs trademarks. That court issued a judgment on February 14, 2007. The court issued an order that Mr. Mueller refrain from using the disputed domain name or from allowing it to be used, on penalty of a fine or imprisonment. On appeal, the Regional Appeal Court of Coblenz, Germany upheld the judgment of the Regional Court (a version of that appeal judgment, translated into English, was attached to the Complaint).
The Complainant claims that the courtвАЩs order was circumvented by the transfer of the disputed domain name to the Respondent. The Complainant claims that R4L Privacy Advocate is responsible for Mr. MuellerвАЩs conduct in transferring the disputed domain name, as the formal registrant of it.
The Complainant makes the allegations against the Respondent as set out in paragraph 4(a) of the Policy.
Firstly, the Complainant claims that the disputed domain name is identical to its registered marks.
Secondly, the Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant claims that, as far as it is aware, it is the only entity operating any business under the name вАЬGerolsteinerвАЭ and is the only holder of related trademarks. The Complainant also points out that the disputed domain name is currently not used, and there is no evidence of the Respondent (then identified by the Complainant as only R4L Privacy Advocate) having any other right or legitimate interest.
Thirdly, the Complainant claims that the disputed domain name was registered and is being used in bad faith. In this connection, the Complainant points to the bad faith registration of the previous registrant, Mr. Mueller, identified in the German Regional Court judgment. Complainant also claims that there is broad public awareness of its mark and that, taking that into account, there is no likelihood that a person could have registered the disputed domain name without awareness of the mark.
In its supplemental filing, the Complainant claims that the respondent-in-fact remains Mr. Mueller. Among other things, the Complainant claims that the details provided with the Complaint indicate that both Mr. Mueller and the Respondent are currently resident in the same city in the United States of America (вАЬU.S.вАЭ), and study at the same university. The Complainant also claims that Mr. Mueller has used the name вАЬGero L SteinerвАЭ previously in Internet forums, and provides a copy of a website apparently to that effect, dated from October 2006. This, says the Complainant, is clearly a fake name and that, had it been otherwise, the Respondent would have provided verifiable identification. In relation to the website which the Respondent claims to use for the вАЬSteiner familyвАЭ the Complainant provided evidence from вАЬWayBackMachineвАЭ that the website was activated only after the Respondent received the Complaint.
The Respondent denies the allegations made in the Complaint.
The Respondent concedes that the disputed domain name is identical or confusingly similar to a trademark in which the Complaint has rights. However, the Respondent claims that the ComplainantвАЩs mark has not achieved a significant level of recognition in the United States of America.
The Respondent claims that he has a right or legitimate interest in the disputed domain name. He claims to have made a bona fide purchase of the disputed domain name from a U.S. citizen, on April 20, 2006. He says that he purchased the disputed domain name for the purpose of having a recognizable web address for a site that would provide his family members with a means of sharing information such as family pictures.
The Respondent claims to be commonly known by the name вАЬGero Leon SteinerвАЭ, вАЬGero L SteinerвАЭ or вАЬLeon SteinerвАЭ and maintains a bank account under the name вАЬGero L SteinerвАЭ. For that purpose, the Respondent attaches a copy of the first two pages of a bank statement, addressed to вАШGero L SteinerвАЩ. The Respondent claims that its website does not create confusion with the Complainant, and expressly disclaims an association between them. The Respondent argues that its use of the disputed domain name should be considered a legitimate fair use.
In relation to bad faith, the Respondent claims to have no information about the registration of the disputed domain name before he acquired it. The Respondent claims to have registered the disputed domain name for a non-commercial home page for his family, which does not relate to the ComplainantвАЩs business. The Respondent claims that there is otherwise no evidence of bad faith, and that, given the investment of time and money into the site, вАЬwe do not want to sell the Domain Name to anyoneвАЭ.
The Respondent claims that the decision of the Regional Appeal Court of Coblenz, as attached to the Complaint, was against Mr. Mueller, вАЬnot against the Domain Name itselfвАЭ and that, among other things, the court did not find that the registration and use of the disputed domain name was an infringement of trademark law; order that the disputed domain name be transferred to the Complainant; or prohibit the use of the disputed domain name by anyone other than Mr. Mueller. The Respondent claims that, by the time the courtвАЩs decision was rendered, Mr. Mueller no longer had any authority over the disputed domain name. The Respondent claims that the Complainant has made false claims to coerce the Respondent to transfer the disputed domain name.
In his supplemental filing, the Respondent denies that he used вАЬGero L SteinerвАЭ as a false name, and claims that the Respondent opened a bank account in that name only after strict identification checks. The Respondent denies a number of implications which the Complainant, in its supplemental submission, draws from attachments to the Response. The Respondent also refers to the decision in MLP Finanzdienstleistungen AG v. WhoisGuard Protected,
WIPO Case No. D2008-0987 in which the then panel found that a German case concerning a right of personality was of no assistance in the panel reaching its decision. The Respondent claims that the decision of the Regional Court of Coblenz, referred to by the Complainant in this case, should be similarly regarded.
6. Discussion and Findings
To succeed under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
In addition to each of these elements, discussed as follows, the Panel has also admitted the supplemental filings of both parties for the reasons which follow.
A. Supplemental filings
As noted above, each party submitted a supplemental filing in connection with this case. Neither the Policy nor the Rules make an express provision for uninvited supplemental filings. It is at discretion of the Panel whether to consider such filings, under paragraph 10 of the Rules.
It is a general principle that a panel may consider a supplemental submission if it raises facts that the Complainant could not have been expected to raise in the Complaint. See Soci√©t√© pour lвАЩ≈Уuvre et la m√©moire dвАЩAntoine de Saint Exup√©ry- Succession Saint Exup√©ry - DвАЩAgay v. The Holding Company,
WIPO Case No. D2005-0165; Playboy Enterprises International, Inc. v. Asia Sun,
WIPO Case No. D2005-0767. If a supplemental filing from a complainant is taken into account consistently with this principle, fairness would usually require that a responding supplemental filing from a respondent would also be considered. Such an approach would usually be consistent with the requirement under paragraph 10(b) of the Rules, for the Panel to ensure that the parties are treated with equality and each given a fair opportunity to present its case.
In this case, the Response clearly raised new facts of which the Complainant could not (or at least, not easily) have been aware: namely, details about the claimed identity-in-fact of the Respondent as вАЬGero Leon SteinerвАЭ. As filed, the Complaint was notified to both Gero Leon Steiner and R4L Privacy Advocate. Accordingly, the Panel considered it appropriate to admit the ComplainantвАЩs supplemental filing. Under paragraph 10(b) of the Rules, the Panel similarly considered it appropriate to admit the RespondentвАЩs supplemental filing in response.
B. Identical or Confusingly Similar
There is no dispute that the Complainant relevantly has rights in a registered mark for GEROLSTEINER. The Respondent concedes that the disputed domain name is identical or confusingly similar to the ComplainantвАЩs mark. The Panel therefore makes such a finding.
While conceding it is identical or confusingly similar, the Respondent also appears to contest this ground on the claim that the ComplainantвАЩs mark вАЬhas not achieved a level of recognitionвАЭ in the United States of America. Whether or not that is the case, such a claim is not relevant to a finding under this first element of the Policy (though it may have relevance to the following two grounds discussed below). This element of the Policy requires only that the Complainant establish rights in a mark, and that the disputed domain name is identical or confusingly similar to that mark.
C. Rights or Legitimate Interests
вАЬCommonly known byвАЭ the disputed domain name
Paragraph 4(c)(ii) of the Policy provides that a respondent may demonstrate a right or legitimate interest if it has been commonly known by the domain name in dispute. The Respondent claims to have such a right or legitimate interest on the basis that he is commonly known by the name вАЬGero Leon SteinerвАЭ and other variants.
The evidence to support this is equivocal. On the one hand, the Respondent presents evidence of a bank statement addressed to him in that name, and apparently opened in that name. (The Respondent did not, however, provide evidence of more direct identification, such as a copy of a passport or driverвАЩs licence).
The Complainant on the other hand points to circumstantial evidence of similarities between the place of residence of Mr. Mueller, against which it has previously taken legal action concerning the disputed domain name and Gero Leon Steiner. The Complainant also suggests that Mr. Mueller previously used the name вАЬGero Leon SteinerвАЭ. It provides a copy of a webpage in German, dated October 2006, with what appears to be something of either a poem or song lyrics variously interspersed with that name (although the Complainant does not explain the import of that webpage and any link between Mr. Mueller or Gero Leon Steiner is not self evident on that page).
It is difficult for the Panel to test this competing evidence. Ultimately, however, the Complainant bears the burden of proof, and the Respondent has put forward plausible evidence to support being at least вАЬknownвАЭ by the disputed domain name. By comparison, the ComplainantвАЩs evidence is circumstantial. There is nothing in the case file which would clearly suggest that the RespondentвАЩs claim is fraudulent in this respect.
For these reasons, the Panel may accept, for the purpose of these proceedings, that the Respondent is (or may be) known by the name вАЬGero Leon SteinerвАЭ. If that was in fact his legal name, that could also be sufficient to find that he is вАЬcommonlyвАЭ known by it.
Effect of related court proceedings
However, what may be evidence of legal documents establishing that a respondent has a personal name corresponding to a disputed domain name, is not by itself always enough to establish a right or legitimate interest for example where issues concerning infringement of a ComplainantвАЩs trademark arise. See e.g. Peter Frampton v. Frampton Enterprises, Inc.,
WIPO Case No. D2002-0141. As that case demonstrates, such evidence, that might go toward a finding under paragraph 4(a)(ii), does not require a finding of a right or legitimate interest, despite the use of the terms вАЬshall demonstrateвАЭ in paragraph 4(a)(ii). In the particular circumstances of this case, this Panel takes a similar approach.
In particular, this Panel does not consider that paragraph 4(a)(ii) of the Policy requires finding of a right or legitimate interest, in circumstances where such a finding would vitiate a finding of a court or similar tribunal. Reading it as a whole, the Policy clearly was drafted not to interfere with the spirit of orders made concerning a disputed domain in the context of such judicial proceedings. The first sentence of paragraph 4(k) of the Policy provides that (in relevant part) the вАЬrequirements in Paragraph 4 shall not prevent [either party] from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory proceeding is commencedвА¶вАЭ. (The subsequent text of paragraph 4(k) deals with the situation of the notification of a court proceeding after the commencement of an administrative proceeding.)
The Complainant in this case submitted the dispute to a court in Germany in 2006, before the commencement of these proceedings. The Panel here reads вАЬthe disputeвАЭ, as used in paragraph 4(k) in the broad sense, of the dispute concerning the domain name, rather than the narrow sense, of the particular dispute as filed between the Complainant and Respondent. That approach appears more consistent with the allowance in paragraph 4(k) of the dispute to be submitted to a court before there is a dispute filed under the Policy.
The Complainant provides evidence that the Regional Court of Coblenz, Germany, ordered on February 14, 2007 that Mr. Mueller refrain from using the disputed domain name or from allowing it to be used. On its face, the transfer of the disputed domain name to the Respondent (or an intermediate registrant) appears to have occurred contrary to that order. This is because the transfer necessarily meant that Mr. Mueller allowed the disputed domain name вАЬto be usedвАЭ.
To counter this, the Respondent, firstly, appears to suggest that there was no breach of that court order because, the Respondent says, Mr. Mueller was not the registrant at the date of the courtвАЩs decision in February 2007, or perhaps that the disputed domain name was transferred from Mr. Mueller before the courtвАЩs order was confirmed on appeal on April 15, 2008. Even if that were so, it appears to the Panel that such a transfer may have been designed to pre-empt the courtвАЩs findings. It could not therefore be the basis for finding a legitimate interest. Such an activity could otherwise allow the Policy to be used to circumvent court proceedings, which clearly is not its purpose.
The evidence also does not establish, contrary to what the Respondent claims, that the domain name was held by someone other than Mr. Mueller at the date of the courtвАЩs order. The Complainant provided evidence of a WhoIs record as at May 18, 2007, which indicated that Mr. Mueller was then the registrant. The only basis for accepting the RespondentвАЩs contention would be to believe that the court misidentified Mr. Mueller as the registrant, and that Mr. Mueller then coincidentally became the registrant at least by May 18, 2007. In the circumstances of this case, the Panel does not find this credible. Despite what is suggested by the Respondent, there is also no evidence that someone else was the registrant at the date of the court order.
Secondly, in his supplemental filing, the Respondent appears to dispute that the German court was a вАЬcourt of competent jurisdictionвАЭ. By reference to Mr. MuellerвАЩs apparent residence in New Mexico, the Respondent states that вАЬAny U.S. court faced with the situation that the defendant is not a U.S. based entity would have dismissed the case long ago due to lack of personal jurisdiction over the defendant.вАЭ Presumably the Respondent makes this statement on the basis that Mr. Mueller is currently resident in the U.S. However the WhoIs details as at May 2007 indicated that Mr. Mueller then had an address in Germany. Regardless, it is not a matter for the Panel to consider whether or not the court had jurisdiction, in relation to a case brought against a third party to these proceedings. The court plainly considered that it had that jurisdiction.
The Respondent makes a number of criticisms of the courtвАЩs decision and of the Complainant in this respect, however, the Panel did not consider them relevant to the essential findings it has set out above.
The Panel has taken into account that there are also suggestions in the case file of some relationship (albeit vague) between the Respondent and Mr. Mueller. Among other things, the Respondent itself attaches an email (relating to a change of registrar for the disputed domain name) dated June 23, 2006, which appears to indicate that Gero L. Steiner was then the registrant, and the Respondent claims that he obtained the disputed domain name on April 10, 2006. As noted above, the Complainant provides evidence of a WhoIs record which indicates that, at least on May 15, 2007, Mr. Mueller was the registrant. As confirmed by the Registrar on September 25, 2008, after the filing of the Complaint, the privacy service R4L Privacy Advocate then appeared as the registrant. The Respondent now states that he, Gero Leon Steiner, is the registrant-in-fact.
What this evidence obviously suggests is that the disputed domain name was registered by the Respondent for some period in 2006, then transferred to Mr. Mueller for some period in 2007, and then transferred back to the Respondent by the time of this proceeding in 2008. There is no evidence of any other intermediate registrant-in-fact. The Respondent does not give any reason for the disputed domain name being transferred from and back to him. In the absence of any explanation from the Respondent, this evidence is suggestive that there may have been some relationship between the Respondent and Mr. Mueller. This conclusion is reinforced by evidence suggesting that both the Respondent and Mr. Mueller are currently resident in the same city in the U.S, which in the particular circumstances seems more than coincidental.
Accordingly, for the reasons set out above, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
For similar reasons to those set out above, the Panel also finds that the domain name was registered and has been used in bad faith. It is clear that the Complainant had obtained a court order in its favor, against the previous registrant, Mr. Mueller, and concerning the disputed domain name. For the reasons set out above, the Panel does not consider that a domain name registered and used in apparent violation of a court order (even by a nominal third party) can be treated as a registration and use in good faith under the Policy.
The evidence of there being some relationship between Mr. Mueller and the Respondent, would also suggest that the Respondent may have had some knowledge of the prior court proceedings concerning the disputed domain name.
The Panel also notes that the prior decision in MLP Finanzdienstleistungen AG v. WhoisGuard Protected,
WIPO Case No. D2008-0987, referred to by the Respondent, is fundamentally different to the case here. In that previous case, the then panel was asked merely to have regard to German case law, concerning a right of personality. However in this case, the Complainant has a court order in its favor, directly relating to the disputed domain name. In these circumstances, the basis on which that order was made is not a matter for this Panel to re-examine.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <gerolsteiner.info>, be transferred to the Complainant.
James A. Barker
Dated: November 7, 2008